Ex Parte Piehl et al

Board of Patent Appeals and Interferences

Dec 7, 2010

11284225 (B.P.A.I. Dec. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ARTHUR PIEHL, MICHAEL G. MONROE, CONOR KELLY,
JOHN R. STERNER, JAMES C. McKINNELL, JAMES R. PRZYBYLA,
and JOHN L. WILLIAMS
____________________

Appeal 2009-014297
Application 11/284,225
Technology Center 2800
____________________

Before JOSEPH F. RUGGIERO, ALLEN R. MacDONALD, and
ROBERT E. NAPPI, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-014297
Application 11/284,225

2
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-8 and 48. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A light absorbing, anti-reflecting filter comprising:
a total reflective layer;
a solid dielectric layer formed overlying and in contact with the total
reflective layer;
a partially reflective layer formed on the dielectric layer;
a first compensator layer formed on the first partially reflective layer;
and
a second compensator layer formed on the first compensator layer;
wherein the first and second compensator layers have different indices
of refraction.

Rejection
The Examiner rejected claims 1-8 and 48 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Spaeth (US 4,158,133) and
Taguchi (US 2005/0046919 A1).
Appellants’ Contentions
1. Appellants contend with regard to independent claims 1 and 48
(App. Br. 18-21; Reply Br. 4-7) that Spaeth teaches away from being
combined with Taguchi since the purpose of Spaeth’s filter is to transmit
light 41, not reflect light. Appellants assert that a total reflector that reflects
infrared light would change the principle of operation in Spaeth (App. Br.
19).
2. Appellants contend that (i) Taguchi reflects infrared light (App.
Br. 19-20; Reply Br. 6); (ii) Taguchi must absorb infrared light, so therefore
Appeal 2009-014297
Application 11/284,225

3
infrared light is not being transmitted (Reply Br. 5); and (iii) there’s no
extrinsic evidence that Taguchi passes all infrared light and reflects only
visible light (App. Br. 19-20).
Issue on Appeal
Did the Examiner err in rejecting claim 1-8 and 48 as being obvious
because the Spaeth and Taguchi references fail to teach or suggest the
limitations at issue?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur
with the conclusion reached by the Examiner.
As for Appellants’ arguments that Spaeth teaches away from
reflecting light, we note that Spaeth states a desire to reflect light in certain
ranges (see Fig. 5; col. 1, ll. 6-10; col. 5, ll. 29-35). So although Appellants
are correct that Spaeth transmits light 41, we find that Spaeth also reflects
light 40 (see Fig. 5). Thus, the combination of transmission and reflection
allows Spaeth to achieve “the aim of optimizing the desired effect” (col. 5, l.
29). We find Appellants’ second line of argument, supra, not commensurate
in scope with the claim language in claims 1 and 48, which do not
discriminate between types of light (infrared/visible).

Appeal 2009-014297
Application 11/284,225

4
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-8 and 48 as
being unpatentable under 35 U.S.C. § 103(a) based on Spaeth and Taguchi.
(2) Claims 1-8 and 48 are not patentable.

DECISION
The Examiner’s rejection of claims 1-8 and 48 based on Spaeth and
Taguchi is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

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